Themainfunction of a trademark is to identify the origin of goods or services. Thus, it is a priority for a trademark to have auniquedistinctiveness, so as to facilitaterelevantconsumers to recognize it as identification todistinguishspecificgoods or services, and to differentiate such goods or services from those provided by others.

Therefore,usingacommondescriptive text or graphicofgoods/services intheindustry as a trademark should be avoided.Furthermore,itshouldbeespeciallynotedthatitis prohibited tofile a trademarkthat isidenticalorconfusinglysimilar to the registered trademarks oftheidentical or similar goods/services.
Wesuggest thattheapplicanttodoa similarity searchbeforefilinga registration application, in order not to receive official rejectionof theapplication due totheexistence ofpriorregisteredtrademarksorpriorfiledapplications.

What is trademark similarity?

The so-called “trademark similarity” means that two trademarks convey similar overall impressions. If the two trademarks are labeled with identical or similar goods/services, then the consumers with common knowledge and experience, exercising their general attention when purchasing, would be confused andmistakenly deem that the goods/services labeled with the two trademarks emanate from the same origin,or that there is an association between the different origins. In principle, the similarity of trademarks is judged on the basis of the overall trademark design. If the trademark design contains any part of which the exclusive right is disclaimed, then the said part will be less regarded in the comparison of similartrademarks since the non-distinctive part is not a main basis for identifying the origin of goods or services.

What are similar goods or services and what are the decisive criteria for trademark examination authority?

Similarity of goods refers to different types of goods that are common or closely related in their function, material, manufacturer or other factors. Similarity of services refers to services that are common or closely related in satisfying the needs of consumers, or in the service providers or other factors.

In this case, if the identical or similar trademarks were labeled, the consuming public would mistakenly believe that the goods or services emanate from the same origin, or different but closely related origins based on the general conception of society and market transactions. As such, the two goods or services are regarded to have similarity.

In practice, the trademark examination authority in making decisions follows the Classification of Goods and Service and Cross-Search Reference Materials, which is compiled in the concept of similar groups.

In principle, if the reference specifies that goods or services are to be cross-searched, then it will be regarded as similar. However, in specific cases, the examination authority will take the general conception of society, market transactions and all sorts of goods or services related factors into consideration. Therefore, in the situation that the trademarks are identical or highly similar, but the goods or services are not clearly prescribed to be from similar groups and have a certain association, then they would possibly be regarded as having similarity.